Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action contains both statutory and non-statutory double patenting rejections.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 11-16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 11-16 of prior U.S. Patent No. 11,225,553. This is a statutory double patenting rejection. The changes to instant Claim 11 do not change the scope of instant Claims 11-16 compared to Claims 11-16 of 11,225,553.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20, 1-12 of U.S. Patent No. 11,225,553 in view of Hansen (U.S. 3,476,705).
The method of Claim 17 of 11,225,553 reads over instant Claim 19’s method but for the specific temperature requirement of instant Claim 19.
Hansen working in the field of polyamic acid and polyimides, teaches in Column 2 lines 35-40 reaction temperatures above 100 oC are useful to form polyimides that are not completely cured and contain some polyamide-acid thus retaining a degree of solubility.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the method of Claim 17 of 11,225,553 such that the polyamic acid is reacted to form a polyimide is done at 100 oC or more in order to not completely cured and contain some polyamide-acid thus retaining a degree of solubility as taught by Hansen.
The reaction temperature of 100 oC or more overlaps that recited by instant Claim 19.
Instant Claims 17-22 are read over by Claims 18-20 of 11,225,553.
The method of Claim 17 of 11,225,553 does not teach specific pyrrolidinyl-2,5-dione moieties of instant claims 23-31.
Claims 1-12 of 11,225,553 recite specific pyrrolifinyl-2,5-dione moieties to make copolymers of the invention of 11,225,553.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 11,225,553 of Claim 17 using the pyrrolidfiny2,5-dione containing monomers/moieties of Claims 1-12 of 11,225,553 because they are recited as monomers of copolymers with such moieties for use in the claimed invention.
This reads over instant Claims 23-31.
Claims 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,225,553 in view of Bryant (U.S. 5,639,850).
Claim 16 of 11,225,553 is applied as above under §101 to instant Claim 16.
With respect to instant Claims 17-18, Claim 16 of 11,225,553 does not teach or suggest the cross-sectional diameter of the wire nor additional coating layers.
Bryant, working in the field of coating polyimides on wires as electrical insulation, teaches in Example 21 a 10 gauge wire coated multiple times with a polyimide solution to create a multi-layer protective coating.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 16 of 11,225,553 such that the coated wire was a 10 gauge copper wire with multiple layers of the polyimide coating because Bryant teaches these sizes of wires are known to be coated to polyimide coatings and also multiple layers are used to create a multi-layer protective coating. This represents the application of a known technique, multilayer coating of polyimides on known wire sizes, to yield the predicable result of a multilayer coating on 10-gauge (circular) wire.
This reads over instant Claim 17-18.
Allowable Subject Matter
Claims 11-31 would be allowable upon resolution of the statutory and non-statutory double patenting rejections of record.
The closest prior art is Fuchi (U.S. 20100317554) which teaches polymides related to Formula III / IV of the instant claims which are based on polyisobutenyl succinimide. Repeat units are shown in ¶[0034] (below). See also ¶[0040] which teaches NH2 end of the amines.
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Huffer (U.S. 20040180797 or US 8,263,535) provides evidence the structure of the polyisobutenyl is based on an ene reaction which leaves a residual C=C. (See ¶[0007])
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This forces the succinimide of Fuchi to be considered under Formula III / IV with the p unit being the –C=C-C- unit. Formulas III/IV would therefore be copolymer formulas and Fuchi does not reasonably suggest such a copolymer. Additionally, while Fuchi teaches the N-substituted alkenyl succinimides can be prepared by reacting maleic anhydride with an olefinic hydrocarbon having 2 to 5 carbons, the sole specific hydrocarbon out of many taught by Fuchi that might meet any of the Formulas I-IV would be ethylene as isobutene does not meet the claim for the above reasons and isopropylene is not specifically recited. It is unclear if such an ene reaction would give a methylene spacer between the maleic anhydride and the ethylene repeat unit or not, although based on how the isobutene reaction does give an methylene spacer one of ordinary skill in the art is reasonably suggested such a methylene spacer structure might result. Such a structure would not read on the claimed formulas for the above reason. Additionally, given that the vast majority of the disclosure is directed to the isobutene variant along with examples, it is not sufficiently specific to anticipate the claimed structures using ethylene and also the recited n and m of the claims without using hindsight or considering the invention of Fuchi under obviousness. However, under obviousness, Fuchi is not relevant prior art because it does not appear related to the field of Applicant, enamels for magnetic wire coatings, and also does not appear to be relevant to the problem to be solved by Applicant in that the none of Fuchi’s lubricating compositional teachings appear relevant to the reduction of crystallinity and lower solution viscosity in enamel coatings desired by Applicant. (see page 1 liens 20-27 of the as-filed disclosure). It is unclear how polymeric succinimides taught as ashless dispersants in lubricating compositions have anything in common with the enamel coatings of Applicant. Therefore, one of ordinary skill in the art would only find it obvious to practice Fuchi to arrive at the claimed invention via the use of hindsight.
Additionally, Harrison (U.S. 5,112,507) teaches lubricating compositions comprising a copolymer of isobutenyl succinimide and an alkylvinylidene monomer useful as dispersants. (see Figure 1 and Abstract). With respect to the R groups in Figure 1 from the alkyl vinylidiene monomer, the R groups on the copolymer structure are taught as containing at least 30 carbon atoms and preferably at least 50 carbon atoms while the other R group is taught as a lower alkyl of 1 to 6 carbon atoms. (See Column 3 lines 40-65) The specifically suggested number of carbon atoms is 32 and 52 preferable. This is outside the range recited by Claims 1/11. Additionally, the only way to conceivably apply Harrison would be under obviousness. However, for the same reasons as above with Fuchi, Harrison is not available as prior art against the claimed invention under obviousness and, therefore, could only be practiced to arrive at the claimed invention using hindsight.
With respect to Mizori (U.S.20110130485) and Lin (U.S. 20060020081) neither document reasonably suggests the recited structures of the claimed invention as Mizori does not have a mirror polymer as claimed (only one “side” has n=1+ units while the other is simply an imide with n=0) and Lin does not reasonably suggest the R7 of the claims. Mizori (WO2021113415A1) also does not reasonably suggest the mirrored polyimide copolymer claims as R2 can only be H or methyl and none of the reactive additive can give the n unit claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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